‘Gene Sequences’ Not Copyright Worthy!

Emergent Genetics v. Shailendra Shivam

The Delhi High Court in the case of Emergent Genetics v. Shailendra Shivam looked into questions surrounding the protection of DNA sequences as copyright and confidential information. In this case, the Plaintiff had alleged that the Defendants had infringed their copyright over hybrid seeds developed by them. The Plaintiff had contended that DNA sequences were analogous to computer programs and could hence be afforded copyright protection. Also, it was their contention that the documentation surrounding DNA sequences could be protected as confidential information. The Defendants, on the other hand, alleged that the Copyright Act was inapplicable for seed hybrid development processes.

Taking into account the contentions of both parties, the following important issues were considered by the Court:

i. Whether copyright protection is granted under Indian law in respect of work for which the Plaintiff claims relief.

ii. Whether the Defendant used the Plaintiff’s confidential information, in an unauthorized manner.

With respect to the first issue, the Court prima facie stressed on the requirement of ‘originality’ for any work to enjoy copyright protection in India. In this light, the Court was of the opinion that sequences obtained from nature were not original, per se since there was no independent creation of a ‘work’ essential for matching the originality requirement. It was held that since the sequences were merely copied from codes available in nature, it would not satisfy the minimum creativity requirement as enunciated by the Supreme Court in Eastern Book Company v. D. B. Modak. The Court also held that even if it was assumed that the sequence was original, it would not be copyrightable due to the merger doctrine, since the idea of combining various gene components or constituents is expressible in limited ways. The Court opined that computer programs could be differentiated from gene sequences in this regard.

Further, following an analysis of the Patent Act, 1970 the Court noted that the process involved in the creation etc of gene sequences had been expressly denied patent protection. Following the same analogy, the Court found it inconceivable that the observation and compilation of the consequence of that process, which is a natural consequence, could receive wide protection as a ‘literary’ work.

With regard to the Protection of Plant Varieties Act, the Court held that although the enforcement of rights under the said Act was not possible since it was not enacted at the time of institution of the suit, the Act was to be looked upon for legislative guidance concerning the matter. In this regard, the Court observed that the Act stressed on novelty, distinctiveness, uniformity, and stability of the plant variety or strain in order for protection to be granted. It was observed that the Plaintiff, while asserting originality, had not demonstrated what was novel or distinct about its seeds nor had they made any mention of any improved efficacy it possessed etc.

Finally, on the issue of confidential information and trade secrets, the Court noted that the Plaintiff had not claimed exclusivity in respect of any particular technique or process; it was the result, i.e., the documentation of elimination, and the attributes of the different strains which were claimed to have been compiled. In the opinion of the Court, if this were allowed to be protected as ‘confidential information’ it would create a dangerous trend wherein every hybridization development could be protected as ‘confidential information’ which would, in turn, monopolise the centuries-old farming practice. Moreover, the Plant Varieties Act requires the breeder to disclose to the farmers the expected performance of the seeds etc. Thus, protecting such documentation as a trade secret would impact the livelihood of a large number of people. In order to substantiate this, the Court also laid emphasis on the fundamental rights guaranteed under Sections 21 and 19 (1) (g) of the Constitution as well as International instruments.

In light of the above, the Court categorically held that the Plaintiff had failed to establish, prima facie, its claim for copyright protection in the databases, claimed by it; and had also not shown that the information, which it claimed to be exclusive, was capable of protection, qualifying as ‘confidential information’.

Author: Vasundhara Kamath

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